Patent Attorney – "Pat. Pend."

Month: May 2011

  • What everyone must know about trademarks

    When you start your own business, you already have an idea for your business, and so the next logical steps always seem to be: 1) register an Internet domain name, 2) get business cards, and 3) reserve a name for your product or service (a trademark).

    The first two steps are easy, and you decide to do those yourself. You may be unsure whether you can reserve a trademark, and so perhaps you check around on the Internet to see what local trademark attorneys charge to help you. Initially thinking that a trademark attorney can help you for $100 or so, you’re shocked when you see what trademark attorneys actually charge.

    Next you may look at so-called “self-help” services. While often less expensive than a trademark attorney, you have to ask yourself “what am I really getting from the self-help service” that you couldn’t just do on your own.

    I can spend the rest of this post explaining why trademark attorneys charge so much, and why using self-help services is a bad idea. But that’s not my purpose today. Instead, I want to tell you a few things that everyone must know about trademarks, and why if you don’t understand these basics, you can find yourself in a heap of trouble.

    1. You need to know if anyone else is already using your mark. This may seem obvious. If you wanted to set up a coffee shop, you’re going to need an original name. You know that you can’t trade off of the goodwill of established and well-known coffee houses. A good place to start is with a general Internet search engine, such as Google, Yahoo, and Bing. Next you might try searching the state registers and the US Trademark Office. Most state registers are available online now, and the US Trademark Office database is available online for free.

    2. You need to know if your mark would be confusingly similar to anyone else’s mark. What does that mean? Just because you don’t find an exact use of your mark, the standard for registering a trademark with the US Trademark Office, and the standard for trademark infringement, is whether a consumer of products or services would be confused by the use of the two marks in question. This is really where the trademark attorney earns his or her fee. It’s generally easy to find out if someone is already using your exact mark for the same goods or services. It’s a lot harder to identify and then determine whether someone else’s mark, although not identical to yours, might be considered confusingly similar.

    This is why its best to hire a trademark attorney to assist you with this determination. Trust me, if you try to register your mark or start using your mark, you may find yourself faced with a letter from someone else’s attorney telling you to stop or face an infringement action (this is called a “cease and desist letter”). Getting yourself out of this mess is going to cost you a lot more time, money, and heartache, than if you had just paid the trademark attorney to help you in the first place.

    3. You cannot use the encircled “R” notation. That is, unless and until you receive a federal trademark registration from the US Trademark Office. Otherwise, you are violating the trademark laws. And you may also be violating other state and local laws, rules, or ordinances based on consumer protection or fraud.

    So can a trademark attorney save you money? While reserving your trademark may seem as simple as ordering business cards at your local office supply store (so why pay a trademark attorney), there are many intricacies that a trademark attorney can help you with that can trip you up and end up costing you more in the long run than if you don’t hire a trademark attorney from the get-go.

  • Can I use a picture I found on the Internet?

    How often are you browsing the Internet when you come across a picture of some scenery, or person, or news event, and you want to “re-post” that picture on our own website, Facebook page, download it onto your computer, etc.?

    Just the other day, I was updating my law firm website and was thinking how nice it would be to have a picture of the Denver skyline with the mountains in the background. I ended up going with a more serene mountain image that came as part of the stock images included with the website development software I use to maintain the Trenner Law Firm website.

    But first I did look around on the Internet to find out if I could find any pictures of the Denver skyline. And of course, the Denver city skyline with the snow-capped Rocky Mountains in the background is probably one of the most-photographed scenes in the Denver area. Now could I have just copied and pasted one of these onto my website?

    Of course. You can copy/paste online images very easily from most web browsers.

    But it would have been illegal to do so.

    Illegal? More than likely. Simply copy/pasting images from the Internet is violating the copyright laws, unless the creator has explicitly granted the work (the photograph in this example) to the public domain or has otherwise licensed its use. (And if it is licensed, you must comply with the terms of the license or again, you are violating the copyright).

    How do you find out if an image is copyrighted? Most images are copyrighted, unless the copyright has already expired (which in most cases can be 75 years or longer – so its unlikely that the copyright has already expired). So you ask, what if the photographer did not register their copyright? Doesn’t matter. Copyright is automatic as soon as the work is fixed in a tangible form of express (i.e., the photograph is taken and fixed in memory of a digital camera or on film).

    So what can you do? First, don’t go around copy/pasting or even downloading images from the Internet, because you might be violating someone’s copyright. Recall those “FBI Warnings” that display at the beginning of DVDs? There are criminal and civil penalties (think “fines”) for violating a copyright.

    Next, either make your own images, or find out how to legally use someone else’s image. For example, I could have easily driven down to Denver and taken my own picture of the Denver skyline to use on my website, and I wouldn’t be violating anyone’s copyright.

    Instead, I ended up using a stock image that is licensed for use with the web development software product I legally purchased. In other words, I am allowed to use this image on my website without violating anyone’s copyright. You don’t necessarily have to buy any fancy software. There are tons of stock image websites on the Internet. Most allow you to browse photographs online for free, and if you find one you want to use, you can either do so with a link back to the source site crediting the photographer, or you can purchase the rights for a nominal sum. Just be sure to read the terms and conditions first so that you don’t end up inadvertently violating someone else’s copyright.

  • Inventors surprised their idea is not new

    It’s not uncommon for an inventor to think that there is nothing like their invention on the market already. This is probably because the inventor has just come up with this idea and has not seen anything similar since coming up with the idea.

    But the reality is, that there is often something else already out there that is at least similar, if not the same as the inventor’s idea. This is why I always urge inventors to do a prior art search before investing a lot of time and money on their invention.

    There are several fairly straightforward (and inexpensive) strategies an inventor can use to find out if their idea already exists.

    A good place to start is with a general Internet search (Google, Bing, Yahoo). Try to be as descriptive of your invention as possible when choosing your keywords (without being overly narrow so that you miss relevant ideas).

    Next, check with online retailers who sell related product lines. Check Amazon.com and other online retailers. If your idea is for a specialty product, check with specialty retailers. For example, if your idea is for an electrician’s tool, check with electrician suppliers.

    If you don’t find your product online, try heading down to your local department store, and ask the salesperson where they carry products that are similar to your idea (but don’t tell the salesperson what your idea is!). Then browse that section of the store. You might be surprised what someone else has already thought of. You may just have never seen it, because, well, you weren’t looking until you had this idea!

    If you still can’t find anything like your idea, either online or in stores, you can try heading over to the US Patent Office website. The US Patent Office has a free online database of all patents ever issued (yes, all the way back to 1790), and all patent applications published since 2001. Developing a good search strategy using the US Patent Office databases can be tricky. Don’t spend too much time here.

    Instead, hire a patent attorney to do a patentability search and analysis for you. Often when I provide the search results to a client, the inventor says “I didn’t realize there were already so many products so similar to mine.”

    That’s why we do the prior art search. It’s better to find out that your idea already exists before you spend too much money filing a patent application for your invention with the US Patent Office, only to have your patent application rejected because someone else already had your idea.